WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. Contact Privacy Inc. Customer 0158418577, Contact Privacy Inc. Customer 0158418577 / Daniel Garcia, Government Logistics LLC

Case No. D2020-1918

1. The Parties

The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).

The Respondent is Contact Privacy Inc. Customer 0158418577, Contact Privacy Inc. Customer 0158418577, Canada / Daniel Garcia, Government Logistics LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <accenture-labs.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2020. On July 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 26, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 29, 2020.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2020.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on September 4, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is an international corporation that provides a broad range of services and solutions in strategy, consulting, digital, technology and operations under the name “Accenture”, since 2001.

The trademark ACCENTURE was registered by the Complainant in several regions of the world, including in the United Stated (registration numbers 3091811 and 2665373, obtained respectively on May 16, 2006 and December 24, 2002).

The Complainant is also the holder of the domain name <accenture.com>, registered August 30, 2000.

The Respondent registered the disputed domain name on June 23, 2020.

The Panel accessed the disputed domain name on September 10, 2020, at which time the disputed domain name was not pointing to any active webpage.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The only difference between the ACCENTURE trademark and the disputed domain name at issue is the addition of a hyphen and the descriptive word “labs”, which creates a direct reference to the Complainant’s “Accenture Labs” business division that is a core component of the Complainant’s innovation architecture. At Accenture Labs, the Complainant incubates new concepts and applies the latest technologies to deliver breakthrough solutions for business and society. The ACCENTURE mark is distinctive and famous. The ACCENTURE mark consists of a coined term and, as such, should be afforded a wide scope of protection, particularly in view of the ubiquitous nature of the brand (as demonstrated by the heavy advertising presence worldwide). The addition of a generic Top-Level Domain (“gTLD”) to the disputed domain name is completely without legal significance. Adding a descriptive term to a trademark in a domain name fails to negate confusing similarity. In assessing a likelihood of confusion between a registrant’s domain name and a complainant’s mark, points of similarity are weighed more heavily than points of difference. Internet users are very likely to be confused as to whether an association exists between the disputed domain name and the Complainant or the Complainant’s “Accenture Labs”.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s ACCENTURE mark is not a generic or descriptive term in which the Respondent might have an interest. The Complainant’s ACCENTURE marks are globally famous and have acquired secondary meaning through the Complainant’s substantial, continuous, and exclusive use of the marks in connection with the Complainant’s goods and services. The Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s ACCENTURE marks or any domain names incorporating the ACCENTURE marks. It is clear that the Respondent is not commonly known by the disputed domain name, nor was it known as such prior to the date on which the Respondent registered the disputed domain name to trade on the value of the Complainant’s famous trademark. It appears that the Respondent has chosen to use the Complainant’s famous ACCENTURE trademark in the disputed domain name to create a direct affiliation with the Complainant and its business. The Respondent is not using the disputed domain name for any purpose at this time. Instead, the disputed domain name resolves to a parked, and otherwise inactive, page that appears to be hosted by the Respondent’s registration service provider. The parked, inactive holding of a disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Respondent’s failure to use the disputed domain name to provide a bona fide offering of goods and services confirms that it does not have a right or legitimate interest in the disputed domain name, particularly since the Complainant has proven its rights in the marks at issue.

- The disputed domain name was registered and is being used in bad faith. Given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE marks on the Internet, it is clear that the Respondent was aware of the ACCENTURE marks long prior to registering the disputed domain name. The Complainant sent emails to the email address listed in the WhoIs information for the disputed domain name inquiring as to the Respondent’s purpose for registering the disputed domain name, obtaining no reply. Given the well-known status of the Complainant’s ACCENTURE marks and the Complainant’s registration and use of the domain name <accenture.com>, there is no reason for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of the Complainant’s marks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The annexes to the Complaint show trademark registrations for ACCENTURE obtained by the Complainant as early as in 2002.

The disputed domain name differs from the Complainant’s trademark ACCENTURE by the addition of a hyphen and the dictionary term “labs”, as well as the gTLD “.com”.

Previous UDRP decisions have found that the mere addition of symbols such as a hyphen or of descriptive terms to a trademark in a domain name does not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).

It is also already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.

The Panel also notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

When the disputed domain name was registered by the Respondent in 2020, the trademark ACCENTURE was already directly connected to the Complainant’s services for almost two decades.

Besides the gTLD “.com”, the disputed domain name is comprised of the Complainant’s trademark ACCENTURE and of the descriptive term “labs”, separated by a hyphen, suggesting an obvious reference (and likelihood of confusion, as well) to the Complainant’s “Accenture Labs” business division, in this Panel view.

The Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “accenture-labs” could be a mere coincidence.

There is no active website linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith.

In the Panel’s view, the circumstances that the Respondent is (a) not using the disputed domain name; (b) not indicating any intention to use it; and (c) not at least providing justifications for the registration of a domain name containing a third-party famous trademark, certainly cannot be used in benefit of the Respondent in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <accenture-labs.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: September 18, 2020